The Trade Secret Value of Early Patent Filing

Patent.Law168The patent laws promote an early filing doctrine.  Most directly, by filing patent application documents early, an applicant can avoid problems created by pre-filing disclosures that can negate patentability.[1]  Inter alia, early filing also provides a presumptive date of invention and reduction to practice that may have important evidentiary benefits for the applicant.[2]  Some doctrines push against early filing. Notably, earlier filed applications may be more likely to have inadequate disclosure.  A rushed disclosure could result in the patent application being rejected under the utility, written description, or enablement requirements of the Patent Act.[3] Alternatively, if the application is filed prior to gaining an understanding of the eventual market, an applicant may have insufficient disclosure to support the most valuable claims potential. 

Going unrecognized is another benefit of early filing – the ability to keep secret later developed innovations and parameters.  That secret information can then be protected and exploited as trade secret information.

At the time of filing, the applicant must provide a complete description including the best mode contemplated by the inventor. However, many if not most patent applications are filed well before the associated product or method is ready for public consumption – before the inventor knows the best commercially viable mode.  Post-application developments could take any number of forms, such as particularly operative formulations; ideal antibiotic manufacturing parameters; software code that implements a novel algorithm; a more durable circuit arrangement; etc. Commonly, these tweaks and advances may take the form of a specific species of a disclosed and claimed genus.  Of course, this later-stage developments could be incredibly important to anyone wanting to practice the invention or develop some follow-on technology.

Even though product development typically continues after the patent application is filed, the law allows the patent applicant to legitimately keep any later developed information as trade secret.  Patent applications are not allowed to add ‘new matter’ to a patent application during prosecution. Likewise, the applicant has no duty to otherwise inform the patent office or the public of ongoing development. Rather, the application is set at filing and ex post developments are generally irrelevant to patentability.[4]

In a later post, I’ll explore whether this potential overlap of patent and trade secret rights is good from a policy perspective.




[1] 35 U.S.C. §102(b).  This is especially critical if filing foreign applications.

[2] See, for example, 35 U.S.C. §102(g) and §102(a).

[3] See 35 U.S.C. §101 and §112¶1.

[4] There may be some exception here when arguing secondary factors of nonobviousness.

57 thoughts on “The Trade Secret Value of Early Patent Filing

  1. If a best mode embodiment is disclosed and claimed and is easily reverse engineerable once the disclosure is seen or read, the proverbial cat is out of the bag and any improvement not detracting from the enabled scope of the invention should at any way possible be added or put into the application at examination procecution time. It is possible that a pro se has more leeway by the examiner in this regard, especially if his help is asked for and it is possibly even a subjective decision by that examiner to do so. The fact that the invention is patentable subject matter and has evolved by its inventor into an improved best enabled mode by examination and thus disclosed should be scrutinized, and if not determined to fall under the heading of new matter, be allowed to be introduced into the application by that examiner, either by amended claims and/or amended drawings and description of drawings, if deemed applicable in that manner. Give any benefits of the doubt to the invenor- this is what the system is supposed to be about-disclosure for protection. Most examiners, I believe, are pretty smart people and can be coerced to keep an open mind, if the inventor meets the requirements, when it comes to an improvement of a best mode. Once the competitor reads the application, hits himself upside the head and exclaims “We should have thought of that,we’re in that business” and therein sees an improvement in embodiment structure, if the inventor doesn’t have his invention claimed correctly and followed up with another patent application to cover any more possible hidden varients, he’s uscwap. Even with protection, it will still be hard to bring to the marketplace and then the inventor might run into the deep-pockets company that loves the invention, and also whould love to cut the inventor out and go for invalidation. Its all just fun and games. You got to rise to the challenges. That’s my story and I’m sticking to it.

  2. FC, SF — I appreciate your arguments and well-thought out disagreements. I think our disagreement is based largely on the primary tensions between trade secret law, which requires secrecy, and patent law, which demands disclosure.

    I don’t believe it’s correct to equate patentability with trade secret protectability. If the optimal mode of practicing the patent is disclosed in the patent application — whether highlighted as such or otherwise — it’s simply not secret anymore. FC, in your hypothetical, I assume that temperature W is disclosed in the range X-Z (though not specifically disclosed as ideal) and that the particular catalyst is also disclosed (though again, not specifically). From a best mode perspective, it’s true that W and the particular catalyst need not be disclosed specifically as the best mode if that combination is not known as best at the time of filing.

    But we agree that they are disclosed. I think we would also agree that, in exchange for that disclosure, you could sue someone using W and the particular catalyst for infringement.

    You can’t have it both ways, protecting something disclosed — albeit not specifically — in exchange for patent rights and then later claiming it as a trade secret.

    Turning to your valid point, SF, while the trade secret may be “discovered” after filing, it was definitely disclosed in the filing. You may not have intended to waive trade secret protection, but you should be aware that subject matter disclosed in an application is no longer secret. In exchange for that broad disclosure, you get the right to sue for infringement of genus claims. It follows that you can’t reclaim the disclosed subject matter as a trade secret.

  3. Anonymous wrote, “Trade secret law requires reasonable steps to maintain secrecy. Publication of the general parameters in a patent application would certainly not qualify as a reasonable step to maintain secrecy.”

    I also think that it’s an interesting argument, but I too disagree. The trade secrets in this discussion are discovered after filing. How can you impose an obligation to maintain the secrecy of something before its discovered?

  4. Interesting argument, anonymous, but I disagree. Suppose I’ve disclosed in my patent that a reaction can be carried out at a temperature of X to Z degrees, optionally with a catalyst, but I discover that at temperature W (which isn’t specifically mentioned in the patent), using a particular catalyst (also not specifically mentioned), I get 50% better yield than what I get in the examples of my patent. Since that knowledge wasn’t specifically disclosed, it may constitute a patentable improvement, but for the same reason I think it can qualify as a protectable trade secret. In fact, I’d say if it *is* a patentable improvement – i.e. it’s not obvious in view of my earlier patent – then it certainly is protectable as a trade secret should I choose not disclose it, as there’s no obviousness requirment for trade secrets.

    Point is, it’s that specific disclosure that’s the key – it’s that specific knowledge that’s the trade secret, and until I actually put that specific knowledge in the public’s possession, I retain the option of protecting it as trade secret. Choosing to use trade secret protection may not be wise, but it remains (and should remain) my choice.

  5. Just because you don’t have to specifically disclose the most commercially viable mode — because you don’t know it at the time — doesn’t mean that mode is a trade secret. If it’s disclosed, even generically, in the application it is not a protectable trade secret.

    Trade secret law requires reasonable steps to maintain secrecy. Publication of the general parameters in a patent application would certainly not qualify as a reasonable step to maintain secrecy.

    While such a species may be patentable under the genus-species rule, and it may not be widely acknowledged as the best way to practice an invention, I would not want to argue to a court that I published it as part of a patent, but it should also be protected as a trade secret.

  6. Professor Karl Jorda from Franklin Pierce Law Center has written/presented/taught about the value of using trade secrets in combination with patents for years. Too many practitioners do not take advantage of the way patent and trade secret protection compliment one another.

    Our patent system’s standard for best mode is low given that it only applies to (1) the inventor (2) at the time of filing. This leaves ample room to trade secret not only collateral know-how but subsequent improvements that may not meet the standards of patentability.

    Although I can see policy arguments in favor of an ongoing obligation to update the best mode, in practice it would be an absurd and impractical requirement.

  7. ” wonder if Dennis might be willing to post something, anything, just to give JAOI and BB some other place for them to carry on their petty and childish ranting.”

    One solution is to simply remove all the thread-jacking off-topic nonsense to a dedicated thread. You could call the thread something like “The Last Stall on the Left” or “Patently Outhouse.”

  8. Drafter you mean the problem is people seeing machines on the market then without further ado filing and prosecuting to issue a set of claims that will read on to the machine? But their filing date must then be AFTER the machine came on the market. And that’s a “problem” for the manufacturer of the machine. As McInroe would say “You cannot be serious”. Can you?

  9. So, updating the requirement to disclose the ephemeral subjective “Best Mode” is “absurd”. I agree. Only the USA requires disclosure of what just happened to be the “best mode” at the time of filing. The caselaw demonstrates that that requirement too is “absurd”. The rest of the world imposes another standard, an objective one: Applicant must enable the full scope of the claim, in the app as filed so that the scope of protection she will get is commensurate with her contribution to the art. Logical, no?

  10. – Drafter why do you use the word “problem”? where’s the “problem”. –

    In context of the preceding discussion, the apparent problem posed was that the original inventor might commercialize an improved variation on the claimed invention, and that some other party might then come along and try to patent the improvement embodied in the commercial product (Archetypal Troll). My point was that statutory provisions exist to prevent exactly the posited scenario, thus weakening this particular argument against early filing.

  11. Professor Karl Jorda from Franklin Pierce Law Center has written/presented/taught about the value of using trade secrets in combination with patents for years. Too many practitioners do not take advantage of the overlap between patent and trade secret protection.

    Our patent system’s standard for best mode is low given that it only applies to (1) the inventor (2) at the time of filing. This leaves ample room to trade secret not only collateral know-how but subsequent improvements that may not meet the standards of patentability.

    Although I can see policy arguments in favor of an ongoing obligation to update the best mode, in practice it would be an absurd and impractical requirement.

  12. Drafter why do you use the word “problem”? where’s the “problem”. BTW (and please excuse my ignorance), while we’re on the statutory provisions, where’s the antecedent, please, for the term “the prior art” in 35USC103? Is it defined by Statute or the courts, that unpublished 102(e) documents can render subject matter obvious, even before anybody (except the 102(e) writer and the PTO), could read what was in the 102(e) doc. Has there ever been anything to stop the Supreme Court holding that unpublished 102(e) art doesn’t “count” as part of the 103 “prior art”?

  13. back to the main topic –

    “The valuable improvements will probably be patented by another if no patent is pursued by the original patentee, thus the trade secret value is diminished if not lost altogether.”

    Isn’t the above problem one of the policy bases for 102(a) and 102(b)?

  14. “as any claims granted that have a basis in the original spec can be given that fd right?”

    That’s probably what the applicant in the PowerOasis case thought, only to find that the broad claims that read on the old and new matter lacked written description:

    link to patentlyo.com

  15. “Did you file a continuation as well? ”

    That’s what I was wondering, but I wasn’t sure if a CIP might not suffice anyway, as any claims granted that have a basis in the original spec can be given that fd right?

    I demand pics for any assertions of sexiness beyond my own.

    Renegade you have the ballz, and that’s a credit to you, but you most likely don’t have the skillz, and recognizing that would be more of a credit to you.

  16. “Most every patent contains amended claims. Even you Sexy, with your countless hours of honed skills, has to rewrite and amend claims all the time.”

    My issue wasn’t with the fact that you amended the claims. Most independent claims end up amended before allowance. It was with the fact that you’re relying on claims drafted by a layman (you) for full protection. That’s just not a good idea.

    I of course wish you the best in your endeavor… I’ve just seen this sort of “do it yourself” mentality end poorly for inventors before..

  17. The claims that are in the published have been amended and are thereby obsolete-just as the embodiment claimed is obsolete. The subliminal point of this thread was how a best mode in an application can be greatly improved without detracting from its scope and falling under the header of new matter being introduced into a patent app. This is possibly a subjective decision by the examiner.Are amended claims worthless- I doubt it. Most every patent contains amended claims. Even you Sexy, with your countless hours of honed skills, has to rewrite and amend claims all the time. Design around my patent and unpublished CIP? Sure-go ahead if you got the balls-I like a good challenge.

  18. “The claims that are published in the application have been amended. I admit that i am not an expert claims writer. The soon-to-be published issued patent with amended claims and yes, a new abstract( I can be too wordy)also will be forthcoming. Laugh all you want, you couldn’t-invent-your-way-out -of -a-wet-paper-bag lawyers like Sexy and Stating- just watch- I’m gonna make a lot of money on my tool. I’ll keep you posted- won’t happen overnite- and I’ll have a lot of fun in the meanwhile working on it-I’m a very patient man.”

    It’s more likely you’ll end up heartbroken when a company designs around your patent in 5 minutes because your claims weren’t drafted by someone who drafts claims for a living. I’ve seen it happen.

    However, it seems that you have done the right thing and filed a CIP. Did you file a continuation as well? Your initial claims are woefully insufficient.

    Whether or not I could “invent my way out of a paper bag” doesn’t matter. I can draft claims because I’ve drafted thousands, prosecuted thousands, and have spent countless hours honing that skill. You haven’t.

  19. Dear Hi Renegade Pro se but I hired a pro for the CIP,

    Re:
    “…you couldn’t-invent-your-way-out-of -a-wet-paper-bag lawyers…”

    If that describes your patent attorney, you’d do well to find another. I have found it is best to work with the very best – and even that doesn’t result in success all the time.

    I haven’t studied the detail of how your wrench works but my impression is that you’ve got a winner. Most big businesses are run by disreputable people and they will steal your intellectual property given half a chance. If “they” surmise that you cannot afford litigation, your chance of making money on this invention is greatly reduced if “they” are correct. If you do litigate, the Eastern District of Texas, at

    link to ecf.txed.uscourts.gov

    , would be a good choice if you can establish a basis for that venue, but hopefully, that’s a bridge you won’t have to cross.

    If you look for a contingency firm, start looking in the very top tier. Beware of shysters and blow-hards even in prestigious firms. Let a tough patent litigator represent/negotiate for you from the very beginning of talks.

    Good luck. I’ve found that luck is always a factor even with great patents.

  20. The claims that are published in the application have been amended. I admit that i am not an expert claims writer. The soon-to-be published issued patent with amended claims and yes, a new abstract( I can be too wordy)also will be forthcoming. Laugh all you want, you couldn’t-invent-your-way-out -of -a-wet-paper-bag lawyers like Sexy and Stating- just watch- I’m gonna make a lot of money on my tool. I’ll keep you posted- won’t happen overnite- and I’ll have a lot of fun in the meanwhile working on it-I’m a very patient man.

  21. I’m not certain that publication of the patented genus wouldn’t destroy the trade secret of the species. Clearly, it wouldn’t preclude patenting the species, but trade secret is not the same thing. I would not want to have to argue that I took reasonable efforts to keep the species “secret,” but disclosed it generally in a patent application. Seems like you would have to argue that you violated the best mode requirement to maintain the trade secret.

  22. “A method of loosening and tightening a fastener head and fastener in an axial manner utilizing a socket wrench apparatus that provides 360 degree constant and unimpeded turning or spinning ability under torquing force applied by a predetermined shape of tool or a tool type. ”

    Well, that is definitely a claim written by someone pro-se

  23. Dear Hi Renegade Pro se but I hired a pro for the CIP,

    Re: “they contacted me”
    How did that come about?

    Was this your first invention for which you filed a patent application?

    Was this your first pro se application?

    Did a “pro” look at your provisional before filing?

    Does your abstract have too many words (I’ve been told the limit is 250)?

    No matter how friendly “they” seem, beware – “they” may act nice until they drop interest and proceed without you.

    Please keep in touch via Patently-O. I have some experience in these matters and will offer my best advice.

    Jaoi™,

    PS: How did you like “Flash of Genius”?

  24. My best mode at the time of filing my patent app changed in a dramatic fashion after I had the revelation and flash of genius for making my innovative hand tool smaller and nimbler, thereby transforming it into an even more functionally friendly tool to use in the mechanical scenario it was intended and to be used for. My examiner realized this fact, that I had improved it in the interim- but not detracting from the original scope of my invention and let me write a kickass independent claim covering all the bases-we accomplished this over the phone. Taking no chances, even I know you have to spend money to possibly make money, I hired a pro to write(my overseeing) and file my patent that will stretch the boundaries of my granted patent even further. I’m sending a working finished model to the biggest tool manufacturer in these here United States to test their interest(they contacted me) in picking up the manufacturing- the point here- the improved best mode would have been thought of by a competitor-good for me that I did it first, after all,its my invention. To all you naysaying patent attorneys who say I have a worthless patent-we’ll see about that. Actually, I don’t even have it yet- issue fee verified- patent in the mail, about a month-CIP for variations and accesories-filed yesterday. I love dis country. Vote McCain.

  25. Following on with sfid holding things as a trade secret risk is potentially someone patenting it and you losing the ability to practice it. I think Merck ran into this problem where they had a compound that showed the best mode of how to make at the original patenting time. They developed a better way to manufacture and kept it as a trade secret. A generic came along and patented the improved method of manufacture. Merck squeaked out and invalidated the generic patent by showing some disclosure of the method of manufacture in a nominal unrelated (Merck) court case. Hidden prior use not available (yet).
    BTW: Excrescence is a great word!

  26. I think that pto needs to consider Multiple invention brief description provisional filings as a way to protect inventions as they are produced in the inventors mind in order to preserve the intellectual material rights. Anything found to be an intellectual material should be preserved as the property of the inventor and preserved for expansion of the information since it is a secrecy filing and because time is of the essence in filing first although it should not be considered the sole method of evidencing.I feel that non-provisional immediate disclosures should be baned as an attempt to steel an invention by destroying the secrecy of the real inventors provisional filing.

  27. I wonder if Dennis might be willing to post something, anything, just to give JAOI and BB some other place for them to carry on their petty and childish ranting. (Or perhaps Dennis should just start deleting the stuff.) The majority of posters seem to actually be interested in discussing the subject matter at hand. Yet, the comments which are relevant keep getting lost in a morass of garbage.

  28. caschneider: Mayer’s dissent in Randomex v. Scopus suggests that burying the best mode might be a violation of the best mode requirement. The facts in Randomex, however, are a bit unique. I am not aware of any other case which heads down the path suggested by Mayer. Here’s a link to the Randomex case: link to altlaw.org

  29. For interested parties only:

    In case my attempt to clear my pseudonym got lost in that tedious “next, next, next” routine on another thread, here it is again:

    Dear Mr. Babel Boy,

    Re:
    “As one obsessed with defamation, did you ever wonder if your maledictions are actionable?”

    Of course I did. With all due respect, calling a jerk an asswhole is defensible – especially if he is dumb enough to put his defamation in writing.

    Slurring an accomplished inventor and business man a “troll” is not defensible. Admit it, you don’t know squat about libel – you are a genuine dyed-in-the-wool asswhole!, aren’t you?

    As far as revealing my identity, please, you first, by all means. Then I’ll call you and reveal my identity, and that’s a promise.

    Here’s what I wrote to SF on the tediously long thread:

    * * * * *

    Dear SF,

    Re:
    “JAOI: Did it occur to you, before launching into your off-topic rants, that the term “troll” has multiple meanings?
    link to en.wikipedia.org

    Your point is well taken, touché. I admit, I have been known to go off topic, as do many other interesting commenters. However, I was directly on topic, Professor Crouch’s new format, and I was most respectful at that, when Babel Boy first libeled my pseudonym, and he repeatedly made libelous remarks.

    In context, Babel Boy’s initial use of “JAOTroll” was clearly to sully one of my obviously-related two pseudonyms with “patent troll,” and his smear came out of the blue without rhyme or reason to an undeniably appropriate response to I made to his comment. I corrected his spelling error. I guess that miffed him – some people are so frail and feeble minded they cannot take correction.

    I wrote:
    “Dear Mr. Boy,
    With all due respect, there are no fonts named “Ariel.”
    link to en.wikipedia.org

    “Monotype’s Arial, designed in 1982, while different from Helvetica in some few details, has identical character widths, and is indistinguishable by most non-specialists.”
    (From: link to en.wikipedia.org)
    Posted by: Just an ordinary white rabbit(TM) | Oct 05, 2008 at 06:34 PM ”

    And Babel Boy responded with this libelous smear:

    “(BTW, thanks to JAOTroll for correcting me on ‘Arial.’ Sharp eye, that guy.)”

    Thank you SF for your comment.
    It gave me the opportunity to make my case and hopefully begin to restore my good pseudonyms.

    I now rest my case.

    Does anybody know if there has ever been a case of interstate libel in regard to pseudonyms?
    Posted by: Just an ordinary inventor(TM) | Oct 24, 2008 at 01:50 PM

    * * * * *

    Dear Mr. Halloweenie,
    Re:
    “There’s simply no false statement here.”

    Wrong – the statement is pejorative, and it is false.
    Calling a rightfully proud inventor a “troll” is wrong, a tort. Even if I didn’t win my case, I may feel compelled to litigate to attempt to clear my pen name, my pseudonym, and the case might set precedent.

    And besides, it would make for an interesting chapter in my forthcoming book, perhaps to be titled:

    “I’m Just an ordinary inventor™
    &
    I have ‘the exclusive Right’”
    Posted by: Just an ordinary inventor(TM) | Oct 24, 2008 at 02:44 PM

    * * * * *

    Dear Mr. Halloweenie,

    Let me add that litigation is my sport-of-choice, much more exciting than baseball, or even football (¢¿©).

    I’m not saying pissant Babbel Babel Boy, who doesn’t even spell his pen name consistently yet he corrects other’s grammar, is worth suing, but he may be. If it turns out he is Just a poor smuck with no money, which I suspect is the case, why, that would reduce the value of the lawsuit.
    Posted by: Just an ordinary inventor(TM) | Oct 24, 2008 at 02:54 PM

    Hey, it is past that special Happy time in Bermuda – and the market didn’t fall apart!

    Boo

  30. I believe that decisions whether or not to protect add-ons to inventions through patenting (vs. relying on trade secret protection) ultimately come down to how complicated the add-on is, how important it is to the main claimed product/method, and how easily it can be designed around. Thus one has to balance a number of factors, and no one rule is going to apply to all inventions.

    It is true that one can hide best mode in an application by supplying many alternatives, but I wouldn’t put it past the courts to eventually require that the best mode not be buried, just as currently the most important art cited in an IDS cannot be buried.

  31. To just an ordinary inventor yes I have done every thing that comes close to a perpetual motion machine in the context of the original idea creation since 1953 without witch the item would not exist.However our patent system creates an all or nothing approach to the development of these original ideas.Even if you file a patent you get squeezed out by indivegules with more money ,a prior art and experimental knowledge, making creating the intellectual properties worthless to the inventor.

  32. I think provisional patents can be considered a patent application when the descriptive elements are sufficient or considered an intellectual material filing when the elements are found to be as yet insuficently described.The main thing is seasoning the ideas in secrecy for 60 days to gain title strength and to demonstrate the ability to add to the bare framework in subsequent applications to prove correct inventorship.First to file is certantly a corrupt system since it does nothing to determine who produced the invention first allowing invention theft by devulgments and evesdroping.An application for provisional intellectual material registering should retain all rights contained for 1year minimum and possibly 20 years in uncontested filings or determinations in favor of the filer through most likley determinations Based on ability to expand and improve on the original ideas and by the volume of major patents filed.

  33. Dear Mr. Thomas,

    Re:
    “My scope of expertise extends to all known categories of invention and beyond.” (From your website).

    May I ask how far beyond?
    Do you do perpetual motion energy machines?

    Also see:
    link to patentlyo.com
    and hit next, next, next at the bottom of each page…

  34. I think provisional patents can be considered a patent application when the descriptive elements are sufficient or considered an intellectual material filing when the elements are found to be as yet insuficently described.The main thing is seasoning the ideas in secrecy for 60 days to gain title strength and to demonstrate the ability to add to the bare framework in subsequent applications to prove correct inventorship.First to file is certantly a corrupt system since it does nothing to determine who produced the invention first allowing invention theft by devulgments and evesdroping.An application for provisional intellectual material registering should retain all rights contained for 1year minimum and possibly 20 years in uncontested filings or determinations in favor of the filer through most likley determinations Based on ability to expand and improve on the original ideas and by the volume of major patents filed.

  35. sdfid – one way to combat the issue of a competitor developing and seeking to patent an improvement you are trying to maintain as a trade secret (e.g., a species) is to file a new application directed SOLELY to the improvement. Even if you file a corresponding PCT or foreign application corresponding to the original application, I believe that you can legitimately request non-publication of your new application directed to the improvement. You’ve already decided that you want to maintain the improvement as a trade secret, so presumably you aren’t interested in foreign patent protection.

    By having the new improvement application on file in the U.S. you have its filing date as a hedge against a competitor who files an application directed to your improvement. You can keep the improvement application alive for quite some time. Then, if you later learn that a competitor is seeking a patent on the improvement or something similar, simply rescind the non-publication request. Your improvement application will publish, and is suddenly prior art as of its filing date.

    Likewise, if you find out that a competitor has discovered and is using your improvement, prosecute the improvement application to issuance.

  36. The above comments have been unusually relevant. Just to add one minor point, the 18 month publications of applications these days limit their secrecy period but may help block some competitors from getting 102(e)or(a)/103/KSR-obvious “improvement” patents, especially those filed more than a (102(b)) year after the base applications publications dates, but that can also impact the improvement filing programs of the basic applications owner.

  37. DC’s discussion about genus-species left out one point, I think. Your competitor could possibly get a patent on the species (depending on how non-obvious it is) and thus block you from practicing it. While it is possible that you can successfully invalidate the species patent, that can be a significant cost. This leaves the possibility that you and the competitor will end up negotiating so that both of you get to sell the species, which may not be what is desired.

  38. Max, I agree with your last substantive comment. Part of the decision to file or not file a follow-on application will depend on how well an applicant can bury what it’s actually doing among a thicket of other disclosure (or co-pending, similar patent applications), thus meeting the best mode requirement without specifically fingering the commercially important embodiment. That way, even if the applicant can’t get claims allowed, it won’t have tipped off its competitors too much. And as you note, the likelihood of competitors arriving at the improvement on their own also figures in the file/don’t file calculus.

    As others have already noted, as an observation or practice tip, this is nothing new. I’m waiting for DC’s follow-up post on this topic re policy considerations.

  39. Max’ last comment is very practical. My experience as in-house counsel indicates that a risk adverse company will err on the side of patenting an improvement (rather than maintain a trade secret) due to concern about a competitor patenting the improvement, destroying the trade secret and precluding the company from practicing the improvement (or at least forcing a difficult licensing decision).

  40. Must I stop? What a spoilsport you are. And even if I promise to make a strict distinction between the body of the law and the body politic?

  41. Good stuff, circuitous. But all those “good practitioners” and their clients have to factor in the possibility that, although they might not get past 6K, a competitor might well be successful. Not enough legal certainty in the USPTO yet, about what claims get through, and which not. So what better protection against being ambushed by competitor improvement patents is there, than to lay down your own carpet of USPTO filings, whether or not they get through to issue? Trade secrets? Engineers move around, don’t they? How long will their knowledge stay a secret? And anyway, what about all those corporate assurances that “We never knowingly infringe the valid claim of a competitor” and the fear of being caught willfully infringing. Isn’t the intimidatory effect of claims pending in the PTO, never mind issued, enough reason for a company to patent even the secrets inside its leaky bucket?

  42. DC’s observation isn’t news to practitioners who seek to obtain commercially meaningful protection for their clients. Patent law treats the inventive process as being static – when you file a patent application, you’re describing the invention as known at the time of filing. There’s no obligation to disclose improvements made subsequent to filing, unless you want to obtain patent protection for those improvements as well. This is true in the USA, all the more so in the rest of the world where there’s no best mode requirement.

    The possibility of later-developed, commercially important improvements, and the possible choice of maintaining those improvements as trade secrets or seeking patent protection for them, is something that good practitioners and their clients have long taken into account when planning a patenting strategy.

    Also, while DC’s post focuses on the possibility of later, patentable improvements being maintained as trade secrets, this is a two-way street: an improvement may be commercially important, but it may not be patentable (for example, the application might wind up in the hands of e6k), in which case maintaining it as a trade secret would be optimal.

    So while it’s not clear if DC is inclining toward saying that disclosure of later improvements should be required as a part of the best mode requirement – we’ll have to wait to the second post for that – my view is that, as in all cases, the choice to file or not should stay with the inventor, whether we’re talking about a first filing or follow-on filing. (If nothing else, required disclosure of subsequent improvements might discourage the filing of initial patent applications.)

    I’m sure this will make for a nice law review article, though.

  43. I think the point that Dennis is making is that the whole “Best Mode” thing, peculiar to US patent law, is an egregious excresence on the slim and sleak body of fundamental essential patent law. It adds bulk, for the lawyers to feed from, but nothing useful, as the rest of the world has already realised. An innovative corporation can patent the basic principle of a new patent or process but, unless it keeps going down that patenting path, patenting every little improvement, its competitors, with their own filing programme, eventually win a war of attrition, and get their noses in front, with or without “Best Mode”. It is naive to suppose that patenting the principle will be enough. The prudent and pragmatic Applicant factors it in to the business plan that its broad claims will fail sooner or later (when the A publications of its competitors emerge) and that, unless it has in the meantime been assiduously patenting the tweaks, it’ll have no valid claims left to assert. Take pharma, for example.

  44. My point is this;

    What Dennis is describing has always existed. If a broad set of valid claims is obtained, then the patentee has a right to exclude others from practicing the invention as claimed.

    My point in terms of market forces is;

    The valuable improvements will probably be patented by another if no patent is pursued by the original patentee, thus the trade secret value is diminished if not lost altogether.

    To be succient, I was interested in determining what position Dennis is taking here, i.e., is this viewed as an abuse or highlighting the status quo to elicit feedback?

  45. btw, D’s point is that you can block off the whole section of research with your patent that gets the generic version of the item and then take a roll at the dice of whether or not anyone else will figure out your special magic you did after filing to make a comercially viable product. Sure, it’s not much, but hey, surely someone got lucky with it.

    Also:

    “thus a new product which is based on but includes new and valuable features in addition to those contained in a filed patent application has no real protection. ”

    Sure it does. You got the whole thing protected, because your new features are bells and whistles that are just more than the “core” which you have claimed already.

  46. “but if these improvements are truely valuable, in all likelihood, competitive market forces would eventually uncover the undisclosed know-how.”

    That could be said about 99% of “non-obvious” patents. What’s your point?

  47. Dennis,

    I am not sure what point you are making here. Trades secrets do not prevent copying of an invention; thus a new product which is based on but includes new and valuable features in addition to those contained in a filed patent application has no real protection. Certainly there may be undisclosed know-how improvements, but if these improvements are truely valuable, in all likelihood, competitive market forces would eventually uncover the undisclosed know-how.

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